Prosecution Insights
Last updated: October 25, 2026
Application No. 19/110,647

ROTARY ELECTRIC MACHINE AND METHOD FOR MANUFACTURING SAME

Non-Final OA §103
Filed
Mar 11, 2025
Priority
Sep 29, 2022 — nonprovisional of PCTJP2022036342
Examiner
SETZER, NICHOLAS LEE
Art Unit
2834
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Mitsubishi Electric Mobility Corporation
OA Round
1 (Non-Final)
68%
Grant Probability
Favorable
1-2
OA Rounds
11m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 68% — above average
68%
Career Allowance Rate
45 granted / 66 resolved
At TC average
Strong +41% interview lift
Without
With
+41.2%
Interview Lift
resolved cases with interview
Typical timeline
2y 7m
Avg Prosecution
30 currently pending
Career history
103
Total Applications
across all art units

Statute-Specific Performance

§101
0.3%
-39.7% vs TC avg
§103
48.0%
+8.0% vs TC avg
§102
26.9%
-13.1% vs TC avg
§112
24.5%
-15.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 66 resolved cases

Office Action

§103
DETAILED ACTION Notice of Pre-AIA or AIA Status The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This Office Action is responsive to the Applicant's communication filed on March 11, 2025. In view of this communication, claims 1-14 are now pending in the application. Claim Rejections - 35 USC § 103 The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claim(s) 1-6 and 12-14is/are rejected under 35 U.S.C. 103 as being unpatentable over MAN (JP 2017103848 A) in view of KANAZAWA (JP 2020127334 A). In regards to claim 1, MAN teaches: A rotary electric machine [abstract] comprising: a motor (Fig 3; 30)including a rotary shaft[0002]; and a control unit (Fig 3; 40) configured to control the motor(Fig 3; 30)[0013], wherein the control unit (Fig 3; 40)includes: a substrate unit (Fig 3; 42)that includes a first circuit substrate(Fig 3; 44), a second circuit substrate(Fig 3; 46), and a holding member (Fig 3; 45)that is disposed between the first circuit substrate (Fig 3; 44)and the second circuit substrate (Fig 3; 46)and holds the first circuit substrate and the second circuit substrate[0029-0030]; a heat sink (Fig 3; 41) that is disposed between the motor (Fig 3; 30)and the substrate unit(Fig 3; 42) and faces the first circuit substrate (Fig 3; 44)in an axial direction of the rotary shaft(Fig 3; 32); and the holding member (Fig 3; 45) includes: a base portion(Fig 3; 45’ plate part); a first locking portion (Fig 15; screw)that is connected to the base portion (Fig 3; 45’)and locks the first circuit substrate(Fig 3; 44) from a second surface of the first circuit substrate (Fig 3; 44)on a side opposite to a first surface of the first circuit substrate facing the base portion(Fig 3; 45’) (screws are used to connect the first circuit to the base portion[0029]); and a second locking portion (Fig 15; screw)that is connected to the base portion (Fig 3; 45’)and locks the second circuit substrate (Fig 3; 46)from a fourth surface of the second circuit substrate (Fig 3; 46)on a side opposite to a third surface of the second circuit substrate facing the base portion(Fig 3; 45’) (screws are used to connect the second circuit to the base portion[0030]). PNG media_image1.png 796 419 media_image1.png Greyscale PNG media_image2.png 262 407 media_image2.png Greyscale PNG media_image3.png 258 435 media_image3.png Greyscale MAN does not teach: a fastening member that fixes the substrate unit to the heat sink, and the fastening member penetrates the substrate unit in the axial direction and is fastened to the heat sink. KANAZAWA teaches: a fastening member (Fig 3; 25) that fixes the substrate unit (Fig 3; 9)to the heat sink(Fig 3; 15B), and the fastening member(Fig 3; 25)penetrates the substrate unit (Fig 3; 9)in the axial direction and is fastened to the heat sink(Fig 3; 15B). PNG media_image4.png 629 638 media_image4.png Greyscale Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify MAN by adding the fastening member and spacer taught by KANAZAWA, to the holding member of MAN in order to increase mounting area [KANAZAWA 0023]. In regards to claim 2, MAN in view of KANAZAWA, teaches the rotary electric machine according to Claim 1: wherein the holding member(Fig 3; 45) the base portion(Fig 3; 45’). MAN does not teach: a spacer that is connected, extends in the axial direction, and abuts on the first circuit substrate and the second circuit substrate, and the fastening member is inserted through the spacer. KANAZAWA teaches: a spacer(Fig 3; 24)that is connected, extends in the axial direction, and abuts on the first circuit substrate (Fig 3; 17)and the second circuit substrate(Fig 3; 18), and the fastening member (Fig 3; 25)is inserted through the spacer(Fig 3; 24). In regards to claim 3, MAN in view of KANAZAWA, teaches the rotary electric machine according to Claim 1: wherein the holding member (Fig 3; 45)includes: a first positioning protrusion(Fig 16; 55)that is connected to the base portion(Fig 3; 45’), penetrates the first circuit substrate(Fig 3; 44) in the axial direction, and is inserted into the heat sink(Fig 16; 41); and a second positioning protrusion (Fig 16; 50b)that is connected to the base portion(Fig 3; 45’) and penetrates the second circuit substrate (Fig 16; 46) in the axial direction. In regards to claim 4, MAN in view of KANAZAWA, teaches the rotary electric machine according to Claim 1: wherein an electronic component(Fig 15; 48) is mounted on the first circuit substrate(Fig 15; 44), the heat sink (Fig 15; 41)and the electronic component(Fig 15; 55), and the holding member(Fig 15; 45) further includes a load transmission portion (Fig 15; 48)that is disposed at a position as viewed in the axial direction and abuts on the first circuit substrate (Fig 15; 44)and the second circuit substrate(Fig 15; 46). MAN does not teach: a thermal grease KANAZAWA teaches: a thermal grease [0062]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify MAN by adding the thermal grease taught by KANAZAWA, to have good heat transfer properties between the power supply circuit board [KANAZAWA 0062]. In regards to claim 5, MAN in view of KANAZAWA, teaches the rotary electric machine according to Claim 1: wherein the motor(Fig 3; 30) includes a rotor that is fixed to the rotary shaft[0014], a stator that is disposed on an outer peripheral side of the rotor[0014], an armature winding that is wound around the stator[0014], and a wiring terminal(Fig 3; 51) that is electrically connected to the armature winding and is connected to the first circuit substrate(Fig 3; 44), the first circuit substrate(Fig 14; 44) includes a motor connection portion (Fig 14; 48)to which the wiring terminal (Fig 14; 51)is connected, and the second circuit substrate (Fig 15; 46)includes a cutout portion (Fig 15; 49)that exposes the motor connection portion (Fig 15; 48)when the substrate unit(Fig 3; 42) is viewed in the axial direction from a side of the second circuit substrate(Fig 15; 46). In regards to claim 6, MAN in view of KANAZAWA, teaches the rotary electric machine according to Claim 2. MAN does not teach: wherein an outer shape of a head portion of the fastening member is substantially the same as an outer shape of the spacer as viewed in the axial direction. KANAZAWA teaches: wherein an outer shape of a head portion of the fastening member (Fig 3; 25)is substantially the same as an outer shape of the spacer(Fig 3; 24) as viewed in the axial direction(both are cylindrical according to Fig 3). In regards to claim 12, MAN in view of KANAZAWA, teaches the rotary electric machine according to Claim 1: wherein the substrate unit(Fig 3; 42) Combination MAN/ KANAZAWA discloses the claimed invention except for a third substrate and second holding member . It would have been obvious to one having ordinary skill in the art at the time the invention was made to duplicate these parts , since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. In regards to claim 13, MAN in view of KANAZAWA, teaches the rotary electric machine according to Claim 1: wherein the substrate unit further(Fig 3; 42) includes an inter-substrate connector(Fig 15; 48) that electrically connects the first circuit substrate (Fig 15; 44)and the second circuit substrate(Fig 15; 46). In regards to claim 14, MAN teaches: A method for manufacturing a rotary electric machine, the method comprising: a substrate unit (Fig 3; 42)assembling step of assembling a substrate unit (Fig 13; 42)by holding a first circuit substrate (Fig 13; 44)and a second circuit substrate (Fig 13; 46)by a holding member(Fig 13; 45); and a substrate unit (Fig 13; 42)fixing step of fixing the substrate unit to a heat sink (Fig 13; 41). MAN does not teach: a fastening member to penetrate the substrate unit in an axial direction of a rotary shaft of a motor and fastening the fastening member to the heat sink. KANAZAWA teaches: a fastening member (Fig 3; 25)to penetrate the substrate unit in an axial direction of a rotary shaft of a motor and fastening the fastening member (Fig 3; 25) to the heat sink(Fig 3; 15B). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify MAN by adding the fastening member and spacer taught by KANAZAWA, to the holding member of MAN in order to increase mounting area [KANAZAWA 0023]. Allowable Subject Matter Claim 7-11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Regarding claim 7, The following is a statement of reasons for the indication of allowable subject matter: The prior art teaches: wherein the control unit further includes a connector assembly including a first press-fit terminal that is connected to the first circuit substrate. However, the prior art does not teach: the first circuit substrate includes a first connector connection portion that is provided at one end portion of the first circuit substrate in a first direction orthogonal to the axial direction and to which the first press-fit terminal is connected, and a length of the second circuit substrate in the first direction is shorter than a length of the first circuit substrate in the first direction such that the one end portion of the first circuit substrate in the first direction is exposed from the second circuit substrate when the substrate unit is viewed in the axial direction from a side of the second circuit substrate. Claim 7 is objected to, and not rejected, because the limitation of BOTH a first connector connection portion that is provided at one end portion of the first circuit substrate in a first direction orthogonal to the axial direction and to which the first press-fit terminal is connected AND a length of the second circuit substrate in the first direction is shorter than a length of the first circuit substrate in the first direction such that the one end portion of the first circuit substrate in the first direction is exposed from the second circuit substrate when the substrate unit is viewed in the axial direction from a side of the second circuit substrate is too specific which makes it novel. Claims 8-11 are objected to, and not rejected, because they depend from a claim that contains allowable subject matter. As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a). Citation of Relevant Art The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Prior Art: CHABILLANT (US 20230178911 A1) contains three substrates and two holders PNG media_image5.png 263 477 media_image5.png Greyscale KAMOGL (US 20140028161 A1) contains figures of the windings connecting to the substrates, as well as the rotor stator structure PNG media_image6.png 326 444 media_image6.png Greyscale Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS L SETZER whose telephone number is (571)272-3021. The examiner can normally be reached Mon-Fri, 8am-5pm EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Oluseye Iwarere can be reached at (571) 270-5112. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /N.L.S./Examiner, Art Unit 2834 /OLUSEYE IWARERE/Supervisory Patent Examiner, Art Unit 2834
Read full office action

Prosecution Timeline

Mar 11, 2025
Application Filed
Oct 16, 2026
Non-Final Rejection mailed — §103 (current)

Precedent Cases

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
68%
Grant Probability
99%
With Interview (+41.2%)
2y 7m (~11m remaining)
Median Time to Grant
Low
PTA Risk
Based on 66 resolved cases by this examiner. Grant probability derived from career allowance rate.

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